USPTO Patents Application 09533906

LEXSEE 1993 us dist lexis 19768

LAWRENCE B. LOCKWOOD, Plaintiff v. AMERICAN AIRLINES, INC.,
Defendant.

Civil No. 91-1640-E(CM)

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
CALIFORNIA

1993 U.S. Dist. LEXIS 19768; 29 U.S.P.Q.2D (BNA) 1637

September 21, 1993, Decided

September 21, 1993, Filed

JUDGES:
[*1] ENRIGHT

OPINIONBY:

WILLIAM B. ENRIGHT

OPINION:

MEMORANDUM DECISION AND ORDER
BACKGROUND

On July 30, 1993, the court entered a Memorandum
Decision and Order granting defendant's motion for
summary judgment on non-infringement grounds. On
August 6, 1993, the clerk's office inadvertently entered
judgment in this case.

Plaintiff now moves this court to clarify any
uncertainty surrounding the judgment entered by the
clerk's office by entering a final judgment in this case
pursuant to Rule 54(b) as to plaintiffs claim of patent
infringement. In addition, plaintiff asks that the court
expressly determine that there is no just rea.son for
delaying an appeal from the final judgment. The patent
infringement claim is the only claim asserted in the
complaint.

Defendant has asserted counterclaims socking
attorneys' fees and a declaration that the patents in suit
are invalid. It argues that the invalidity counterclaim is
crucial to the continuing conduct of defendant's computer
reservation business. Thus, it argues that the court should
decide the validity issue, despite the non-infringement
ruling, so that defendant has the possibility of becoming
free from future litigation by Lockwood involving

SABREvision. Defendant [*2] also argues that the court
should deny plaintiffs motion because it is not likely to
be successfiil and would unreasonably delay resolution
of this case for more than a year.

DISCUSSION

Fed. R. Civ. P. 54(b) gives the court discretion to
direct the entry of a final judgment as to one or more of
the claims upon the express determination that there is no
just reason for delay. Judgments under Rule 54(b) must
be reserved for the unusual case in which the costs and
risks of multiplying the number of proceedings and of
overcrowding the appellate docket are outbalanced by
pressing needs of the litigants for an early and separate
judgment. Frank Briscoe Co. v. Morrison-Knudsen Co.,
776 F.2d 1414. 1416 (9th Cir. 1985).

Lockwood argues that Rule 54(b) relief is warranted
because the judgment: 1) finally determined plaintiffs
claim; and 2) the infringement issue is separate from the
other claims for relief See fV.L Gore v. Intern Medical
Prosthetics Research, 975 F.2d 858 (Fed. Cir 1992).

Additionally, plaintiff argues that the most efficient
course of action for this court is to enter a final judgment
on the infringement [*3] issue. However, all of
plaintiffs arguments are effectively disposed of by a
recent decision by the Supreme Court. See Cardinal
Chemical Co. v. Morton International, Inc., 124 L. Ed.
2d I, 113S. a. 1967(1993).

First, plaintiff argues that the infiingement issue
finally determined plaintiffs claim. It cites Gore for the
proposition that once the district court decides the
infringement issue, it need not decide the invalidity
issue. Id. However, the Supreme Court has recently

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1993 U.S. Dist. LEXIS 19768, 29 U.S.P.Q.2D (BNA) 1637

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indicated its preference that district courts rule on both
the invalidity and infringement issues, even when non-
infringement is found. See Cardinal Chemical Co. v.
Morton International, Inc.. 124 L. Ed. 2d 1. 113 S. Ct.
1967(1993).

Second, Lockwood argues that the infringement
claim is separate from the validity issue because they
involve different factual and legal issues. While this
argument is technically true, it was given little
consideration by the Supreme Court in Cardinal, where it
indicated that district courts should decide both the
infringement and validity questions. See Id.

Finally, Lockwood [^4] argues that it would be
more efficient for this court to enter a final judgment and
allow an immediate appeal because if the non-
infringement ruling is upheld there will be no reason to
try the validity issue. However,' in Cardinal, the Supreme
Court noted the importance to the public at large of
deciding patent validity issues. See Id. Thus, even if the
non-infringement ruling were upheld, this court would
still need to address the validity issue.

This court agrees with defendant that Lockwood has
presented no evidence or argument which suggests that
this is an unusual case warranting relief under Rule
54(b). The arguments made by plaintiff are the same
arguments that could be made in every patent case. In
light of the direction provided by the Supreme Court in
Cardinal Chemical, this court finds that granting
plaintiffs Rule 54(b) motion would only unnecessarily
delay resolution of this case. Thus, plaintiffs Rule 54(b)
motion is denied and this case will continue in the
normal course of events.

CONCLUSION

Upon due consideration of the parties' memoranda
and exhibits, the arguments advanced at hearing, and for
the reasons set forth above, the court hereby denies [*5]
plaintiffs Rule 54(b) motion. The clerk's office is
directed to vacate the judgment issued in this case.

DATED: September 21, 1993.

WILLIAM B. ENRIGHT, Judge

United States District Court

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